Anyone practising trade mark law knows opinions often differ when two confusingly similar marks are compared.
In New Zealand, a perfect example is comparison of the marks "WILD GEESE" and "WILD TURKEY" – both used in relation to beer and other alcoholic beverages under classes 32 and 33. Registration of "WILD GEESE" was unsuccessfully opposed at a 2004 hearing, however, on appeal, the High Court held conversely. On further appeal, the Court of Appeal took the same view as the Assistant Commissioner (AC) at the initial hearing. In December 2007, the Supreme Court then determined what weight an appeal court should give to lower court value judgements: it confirmed that appellate courts are entitled to form their own opinions – "even if it was a conclusion on which minds might reasonably differ".
In 2008, the following two cases resulted in subjective decisions which equally divided opinion.
LUCKY DREAM/LUCKY DRAW v LUCKY STRIKE
Opposition was lodged against registration of the marks "LUCKY
DREAM" and "LUCKY DRAW" under class 34, in relation
to cigarettes, given the opponent's "LUCKY STRIKE"
mark. Yet, the AC concluded that the marks were different
conceptually, visibly and audibly. Moreover, she noted that in
light of the legal restrictions around the sale and promotion of
cigarettes (no advertising is allowed, nor any display of
cigarettes on counters in New Zealand), consumers are generally
brand loyal and would have to ask for a certain brand of cigarettes
rather than purchasing them off the shelf, thereby further reducing
any likelihood of deception or confusion.
By contrast, in 2008, the High Court held that use of the marks was
likely to cause deception and confusion as the marks had the same
first word and shared the idea of success in a game of chance. The
High Court therefore overturned the AC's decision, noting that
due to the legal requirements limiting public display of the goods,
consumers could point to and/or shopkeepers could select the wrong
product with the former failing to recognise a different product
had been retrieved or, worse yet, believing "LUCKY DRAW"
or "LUCKY DREAM" products were part of the "LUCKY
STRIKE" family. Accordingly, the Court thought a reasonable
possibility of confusion existed.
DAIMLERCHRYSLER v SANY GROUP
DaimlerChrysler opposed Sany Group's application for
registration of the mark "SANY" and device in relation to
machines and vehicles in classes 7 and 12.
The AC agreed there was substantial awareness of
DaimlerChrysler's marks domestically, in relation to passenger
cars and trucks. However, she considered that the marks were
visually and conceptually different, as the device element of
Sany's mark suggested rotational movement and the barbed lines
pierced the circle around it, coupled with inclusion of the
prominently displayed word "SANY"; whereas
DaimlerChrysler's device marks were said to consist of a sleek
(not barbed), symmetrical, three-point star within an unbroken
ring, that therefore appeared as a static mark.
Ultimately, the AC did not think use of Sany's marks would be
likely to deceive or cause confusion, and registration was allowed.
However, a straw poll at a meeting of the New Zealand Institute of
Patent Attorneys in 2008 showed that opinion on confusing
similarity was still divided. The AC's decision is currently
under appeal.
In light of the "WILD TURKEY" dicta, can any of these views be referred to as "correct" or "incorrect", and what is the likelihood of success on appeal? Again, opinions vary: even amongst the judiciary.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
